IP Law Bulletin

On August 7, 2010, Elena Kagan officially assumed office as an Associate Justice of the Supreme Court of the United States. Justice Kagan was born in New York, New York and has earned degrees from Princeton, Oxford, and Harvard Law School, where she served as supervising editor of the Harvard Law Review.

Justice Kagan clerked for Abner Mikva of the U.S. Court of Appeals for the District of Columbia Circuit and for Justice Thurgood Marshall of the Supreme Court of the United States. She also worked as an associate at Williams & Connolly, LLP, as professor at the University of Chicago Law School and at Harvard Law School, and as associate counsel to President Clinton. Justice Kagan also served as deputy assistant to the President for Domestic Policy, as Deputy Director of the Domestic Policy Council, and as the 11th dean of Harvard Law School. President Obama nominated her to serve as the 45th Solicitor General of the United States and then to serve as an Associate Justice of the Supreme Court.

Leading up to Justice Kagan’s confirmation, much was written about the relative lack of a “paper trail” from which one might infer her position on certain issues. Indeed, as a non-judge, she had never authored a court decision or opinion prior to joining the Supreme Court. In addition, Justice Kagan has written comparatively few journal articles and other scholarly papers. As a result, Justice Kagan’s views on the law of intellectual property remain mostly a mystery.

Nonetheless, Justice Kagan certainly does have experience with IP issues. For example, as Solicitor General, she oversaw her office’s handling of the Bilski¹ case. In that case, the Solicitor’s Office supported the Federal Circuit’s “machine or transformation” test for determining patent eligible subject matter under 35 U.S.C. §101 and argued that the petitioner’s claims were directed to an unpatentable method of organizing human activity.  

During her time as Solicitor General, Justice Kagan was also involved in the Able Time² trademark case, in which her office opposed the petitioner’s argument they were free under the Tariff Act to import items bearing a registered trademark, so long as the trademark owner did not yet make the same item.  

Justice Kagan also has experience with copyright issues. While she was Solicitor General, her office opposed certiorari in Cable News Network, Inc. v. CSC Holdings, Inc., 129 S.Ct. 2890 (2009), a copyright case concerning remote-storage DVR technology.In the brief, Justice Kagan’s office supported the lower court’s holding that the technology wouldn’t violate copyright holders’ rights, and argued that the technology was a fair use. Her office also submitted an amicus brief in the Reed Elsevier³ case, arguing that a federal statute requiring registration of a copyrighted work before an action for infringement can be instituted did not limit the subject-matter jurisdiction of the federal courts.

During her time at Harvard Law School, Justice Kagan was a proponent of the school’s Berkman Center for Internet & Society, and was credited with recruiting Lawrence Lessig and other prominent IP scholars.

In sum, while Justice Kagan’s judicial philosophy on intellectual property issues is thus far unknown, there is no question that she has considerable experience in the field.

¹Bilski v. Kappos, 130 S.Ct. 3218 (2010).
²Able Time, Inc. v. United States, 129 S.Ct. 2864 (2009).
³Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2009).  

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.